Education
Details on the Professional Development Courses offered at the LES 2023 Annual Meeting can be found below. For more information, click here.
You can add-on a course when you register for the Annual Meeting or you can register for a course only.
Courses are taking place onsite in Chicago, IL – we are unable to accommodate virtual attendance at this time.
OR
Mechanics of a License
October 14 | 9am-4pm CT
Price – Member – $149.00, Non-Member – $349.00, Student – $99.00
View course description and Instructors below
To kick off our Mechanics of a License series, we’re talking about arguably the most important clause in a licensing agreement: the grant clause. There’s something for everyone in this crash course on what’s conveyed through the execution of a license.
Most* licensors want to be paid, of course. Other things being equal, licensors like to get as much as they can up front and nonrefundable, to reduce the risk that, for whatever reasons, the licensee won’t be able to execute. For so-called running royalties, licensors don’t want to spend a lot of time and money making sure that they’re not being shorted. Especially when an exclusive license is granted, a licensor will generally want to bargain for minimum quarterly- or annual royalties (or other performance standards). Licensees, on the other hand, generally want to minimize their nonrefundable and up-front payments and their minimum-royalty obligations. For running royalties, licensees want to streamline their ongoing bookkeeping, reporting, and paperwork burdens. Both sides should have in mind that market conditions could change, which might call for change in the arrangements. This session will explore creative ways of addressing the “legitimate needs and greeds” of both sides of the table, featuring annotated license-agreement clauses based on real-world agreements.
*Not including the software developers who release their code under various flavors of Free / Open-Source Software (FOSS) licenses.
Indemnification clauses are sometimes treated as boiler-plate clauses, reserved for a quick glance of the lawyers shortly before the execution of an otherwise negotiated agreement. In this hour, learn why that is almost always a mistake and emerge equipped with an understanding of the various types of contract damages and how thoughtfully drafted indemnification clauses can be an effective tool to manage risk.
If you’re working on a deal for a licensor — or you’re working on a deal for a licensee and want to know what provisions your licensor may ask you for — this fast-paced, one-hour session will share key provisions that you may not have included in your most important deals. Like the previous sessions in this great Mechanics of a License series from the Licensing Executives Society, this session will include specific clauses from real-world licensing documents that you can use in your own deals.
Boilerplate clauses generally refer to standard clauses in commercial contracts that aim to ensure the enforceability of the contract, protect each party against performance failures beyond its control, identify the contract’s governing law, and ascertain the mechanism for resolving disputes. Many times, the parties overlook such boilerplate clauses. This session will explain why the parties should pay careful attention to such boilerplate clauses because they can have profound effects in the event of a dispute.
More information coming soon.
Matthew McNeill has overall responsibility for Innovation and Intellectual Property, including the licensing function, which has historically concentrated on in-licensing. He is also concentrated on business development through seeking and acquiring technology for the company. This can range from strategic supply agreements, to joint development, to IP licensing, to joint ventures to IP or corporate acquisition. He has also led business development efforts in emerging technology space in which “ultra-patentes” (beyond patent) strategies had to be employed to secure sustainable competitive advantage.
Matthew has an undergraduate degree in Physics (Texas A&M) and a law degree (Boston College).
Frank Amini is an intellectual property attorney at Shackelford, Bowen, McKinley & Norton, a full-service business law firm. Frank has substantial experience in patent prosecution, intellectual property licensing, intellectual property transactions, and intellectual property litigation.
As a registered patent attorney, Frank has written and prosecuted numerous patent applications in various technological areas, including materials science, nanotechnology, biotechnology, the life sciences, and the chemical arts. As a Certified Licensing Professional, Frank has drafted and negotiated numerous intellectual property license agreements in connection with the acquisition of commercialization rights for numerous technologies, including medical diagnostics, medical devices, fluid purification processes, software, and databases.
Frank has also drafted and negotiated numerous agreements related to technology transactions, including master services agreements, consulting services agreements, non-disclosure agreements, facilities use agreements, and asset purchase agreements.
Additionally, Frank has substantial experience in numerous intellectual property-related transactions, including preparation of freedom to operate opinions; rendering opinions regarding patentability and patent infringement; evaluation of the intellectual property portfolios of various companies and institutions in connection with mergers, acquisitions, lending, and capital investments; and devising intellectual property protection strategies.
Frank holds a B.A. in Microbiology from the University of Texas at Austin, a Ph.D. in Biological Chemistry from the University of Texas Southwestern Medical Center, and a J.D. from Chicago-Kent College of Law.
Paul A. Stewart is a Past President & Chair of the Board of Governors of the Certified Licensing Professionals organization, and is listed in the 2023 edition of Intellectual Asset Management magazine’s “IAM Strategy 300: The World’s Leading IP Strategists.” Following a 25-year career at Eli Lilly and Company, and its animal health spin-out business Elanco, he retired from Lilly in 2012 and formed PASCO Ventures LLC to help a select group of clients with complex global licensing matters. Stewart is the inventor on US Patent 11,411,531 (titled “Cleaning Method for Solar Panels”). Stewart has done deals on all continents except Antarctica; he has a B.S. from Purdue University and an MBA from Harvard. He resides in the Denver area.
*Not including the software developers who release their code under various flavors of Free / Open-Source Software (FOSS) licenses.
Due Diligence
October 15 | 8am-5pm CT
Price – Member – $449.00, Non-Member – $549.00, Student – $249.00
Due Diligence is the research conducted prior to engaging in a business transaction. This course will provide guidance on how to develop and implement a due diligence strategy for a deal involving intellectual property (IP). It will discuss the What, When, Where, Who and How to perform due diligence depending on the deal and its importance to your organization.
Modules will cover aspects of technical due diligence (e.g., technical readiness), legal due diligence (e.g., ownership, remaining legal life of IP assets, freedom to operate), and Commercial and financial due diligence (e.g., market size, market growth, pricing).
View Instructors below
Matthew McNeill has overall responsibility for Innovation and Intellectual Property, including the licensing function, which has historically concentrated on in-licensing. He is also concentrated on business development through seeking and acquiring technology for the company. This can range from strategic supply agreements, to joint development, to IP licensing, to joint ventures to IP or corporate acquisition. He has also led business development efforts in emerging technology space in which “ultra-patentes” (beyond patent) strategies had to be employed to secure sustainable competitive advantage.
Matthew has an undergraduate degree in Physics (Texas A&M) and a law degree (Boston College).
Louise is currently the Executive Director of LES USA & Canada. She is also a licensing consultant and active volunteer. Louise retired from ExxonMobil Upstream Research, after holding diverse scientific, managerial and staff assignments. She spent the last third of her career working the company’s Commercial, Intellectual Property and Licensing group, and was responsible for IP processes, the intellectual property aspects of agreements, and licensing transactions impacting ExxonMobil’s upstream business. Louise continues to be an active volunteer for LES, serving as Secretary of the Board of Directors, Co-chair of the Marketing and Communications Committee, a developer and presenter of LES education programs and an active member of the Houston Chapter leadership team. Louise volunteers for other organizations as well, including the Univ. of Texas Venture Mentor Service and College Money Matters. She continues to use her experience as a scientist and licensing professional to mentor others and is very proud of being honored with the Frank Barnes mentoring award. She holds a ScB degree in Geological Sciences from Brown University and MS and PhD degrees in Geochemistry from Stony Brook University. She is a Certified Licensing Professional and co-inventor on two patents.
Karen Temple has a unique vantage point from 20+ years experience working in different organizations along innovation value chain, from academia to technology companies including start-up ventures and large corporations. Over the years, she’s been responsible for technology and business development, including securing early-stage public/ private investment to finance growth opportunities, and developing and implementing strategies to validate technology/product/market fit. More recently, Karen joined the University of Toronto where she works with leading global researchers developing technology solutions to some of the world’s most challenging problems. She has a PhD in Chemistry, has published numerous peer-reviewed papers; is a co-inventor on 2 patents, and serves as on the Board of the Licensing Executive Society USA & Canada.
Samuel Mercer has over 20 years of global pharmaceutical development experience, previously managing external agreements and outsourcing in the areas of multinational clinical trials, IT and scientific consulting, academic alliances, and pharma licensing, and negotiating directly over USD 600 million in varied external agreements for both Roche and Novartis in Basel, Switzerland. Prior to this, he managed proposals, contracts, and business development at several global contract research organizations in the UK and US. More recently, he is a management consultant, interim executive, board member, and advisor to a number of biotechnology and software/tech startups. His focus is on technology and IP development, clinical trial strategy, financial modelling, startup-company strategy and funding, and negotiating and managing of complex business agreements.
Managing IP Value in Startups & Early Stage Ventures: Leveraging IP for Funding, Growth and Exit
October 15 | 11am-6pm CT
Price – Member – $499.00, Non-Member – $599.00, Student – $349.00
Target Audience: entrepreneurs, VC and corporate venture investors, legal advisors, inventors, transactions lawyers, licensing professionals, university tech transfer, and others involved in creating and commercializing IP in startups or in other corporate/academia early stage situations.
IP Assets are the foundational building blocks of startups in today’s global economy, and understanding how to grow the value of these assets is critical to startup success. This class was specifically designed to provide tools, models and practical advice on how to manage and grow the value of IP assets as strategic business assets in startups and other early stage ventures. As startups grow into Unicorns (pre-exit valuation of over $1 billion) faster than ever, it is critical to make sure they have the right IP foundation to support their value, enter new markets and achieve a successful exit. Through a combination of class discussion, case studies, interactive group assignments and analysis of current events, we will explore topics including:
- The startup lifecycle and valuation: from funding to exit
- The intersection of IP valuation and startup valuation
- Creating an IP portfolio that is aligned with startup valuation growth
- Using big data analytics and pricing databases in making IP decisions
- Leveraging IP assets for funding, growth and exit
- The investor’s perspective on IP value: Debt v. Equity Funding
- IP valuation considerations in exit: Mergers & Acquisitions
View Instructors below
Efrat Kasznik is President of Foresight Valuation Group and a Lecturer at the Stanford Graduate School of Business. Ms. Kasznik is a Silicon-Valley based IP valuation and strategy expert with over 25 years of consulting experience, focused on assisting IP holders across industries with the valuation, commercialization, and monetization of their intangible assets. She helps clients, ranging in size from Fortune 100 companies to start-ups, with IP and business valuations in support of licensing deals, IP and technology acquisitions, M&A transactions, financial reporting, strategic planning, and fundraising. She frequently serves as a testifying expert in disputes involving IP and startup valuations and damages.
Ms. Kasznik currently serves as an LES USA-Canada Board member; she previously served as Chair of the High-Tech Sector (2019-2020), and Chair of the Valuation Committee (2021-2022). She is also currently serving Chair of the LES Silicon Valley Chapter. Ms. Kasznik has been recognized as one of the top IP strategists in the world by IAM 300 every year since 2013. Throughout her career, Ms. Kasznik has also served as co-founder and adviser to several start-ups, and held the position as CFO at a telecom start-up. She currently serves on the advisory boards of several start-ups, accelerators and venture funds in the United States, Europe, Asia and Israel.
Ms. Kasznik holds an MBA from the Haas School of Business at the University of California, Berkeley and a BA in accounting and economics from the Hebrew University, Jerusalem.
Sam Wiley joined LOT Network in 2023 to lead LOT’s thought leadership and partnerships initiatives. In his IP career, he has examined patents with the USPTO, testified in Federal court on the value of IP, and advised clients ranging from Fortune 100 multinational companies to boutique law firms on implementing technologies that streamline IP operations and provide critical decision support on innovation strategy. He has presented on IP and innovation topics across North America, Europe, and Asia, and is the chair of the Licensing Executives
CLP Exam Review
October 18 | 8am-5pm CT
Price – $995.00
Having the Certified Licensing Professional (CLP) credential in intellectual property licensing and commercialization is a valuable career asset. A CLP designation:
Signifies your experience and qualifications to your clients, colleagues and potential employers;
Shows that you understand and use the latest industry practices; and
Demonstrates that you take your licensing career seriously.
The CLP Exam has been modified and reformatted. Are you planning on taking the CLP Exam this year? If so, prepare yourself with help from LES experts! LES is the leading association for intellectual capital management, technology, and business development professionals to achieve professional and personal success. Over 90% of those who take the LES CLP Exam Review Course pass the CLP exam!
During the course, our expert CLP-certified instructors will review and discuss:
Principles and concepts from each of the reconfigured five established domains tested on the CLP Exam; and
Sample questions from the approved CLP Sample Exam.
After the course, you will have access to your CLP course instructors, where you can get answers to your specific questions from these LES experts.
For more information on the CLP Exam, and to view a copy of the CLP Candidate Handbook, visit Certified Licensing Professionals, Inc.
View Instructors below
Graham Rogers is a Principal in the Forensic, Litigation, and Valuation Services. His professional career spans more than 30 years. For more than 20 of these years, Graham has been assisting clients with their intellectual property needs. He has been retained as an expert to determine economic damages in a variety of litigation matters including patent infringement, trademark infringement, theft of trade secrets, and copyright infringement disputes. Graham has testified in several federal jurisdictions as well as various state courts.
Additionally, Graham is certified to provide Fair Market Value opinions of intangible assets for a variety of needs. Graham has also assisted clients with their intellectual asset management needs including intangible asset inventories, pricing, and royalty audits.
Prior to joining EisnerAmper, Graham operated his own firm, for more than nine years. Prior to that, Graham held senior leadership positions at national and regional accounting firms. While at these firms, Graham assisted clients with their litigation support and valuation needs. His prior experience has provided him the practical foundation (economic modeling, discovery assistance, financial statement review and industry/market research) required to successfully handle expert witness needs, valuation matters, and intellectual asset management needs.
Graham served as a naval officer in the U.S. Navy for seven years. While in the Navy, Graham was an engineering officer aboard two naval warships responsible for machinery and personnel management, and quality control. While assigned to U.S. Space Command’s Cheyenne Mountain Air Force Base, Graham was the most junior officer to ever attain the position of Missile Warning Center Crew Commander and Chief of Standardization and Evaluation.
Graham is a speaker on a variety of topics including intellectual property damages and intellectual property valuation.
Jennifer Gottwald is a Director of Licensing at the Wisconsin Alumni Research Foundation (WARF), where she has worked for eighteen years. WARF manages the patenting and licensing of the University of Wisconsin – Madison (UW), the WiCell Research Institute, and the Morgridge Institute for Research. Dr. Gottwald is responsible for the licensing of a portfolio of life science research tool and biotechnology intellectual properties, including green technologies. She is a Certified Licensing Professional and Patent Agent. She received a B.S. in botany and German literature, and a Ph.D. in plant molecular biology, from the UW. She lectures in the M.S. in Biotechnology program at the UW, serves as a trustee of the WiSys Technology Foundation, and is a founder and active in the Association of University Technology Managers (AUTM) Women Inventors group
Paul A. Stewart is a Past President & Chair of the Board of Governors of the Certified Licensing Professionals organization, and is listed in the 2023 edition of Intellectual Asset Management magazine’s “IAM Strategy 300: The World’s Leading IP Strategists.” Following a 25-year career at Eli Lilly and Company, and its animal health spin-out business Elanco, he retired from Lilly in 2012 and formed PASCO Ventures LLC to help a select group of clients with complex global licensing matters. Stewart is the inventor on US Patent 11,411,531 (titled “Cleaning Method for Solar Panels”). Stewart has done deals on all continents except Antarctica; he has a B.S. from Purdue University and an MBA from Harvard. He resides in the Denver area.
